257 F. 321 | 4th Cir. | 1919
The plaintiff, the Rosemary Manufacturing Company, is the owner of reissued letters patent No. 12,159, granted September 29, 1903, to Samuel E. Patterson. It charges infringement by the defendant, the Halifax Cotton Mills, Incorporated. The lower court dismissed its bill, and it has appealed.
[f the patent is valid, its claims can be read upon the looms used by the defendant. The latter, however, denies validity, and in the alternative says it has a license. 'In the view we take of the first con
In many inventions there are two distinct steps: First, the conception of the general result wished for; second, the discovery of a way of obtaining it. In a large majority of cases, perhaps, the first may be obvious to every one interested in á particular art, and it is the second which calls for the exercise of inventive genius. But that is not always so. It may well be that two or more machines, appliances, or tools are old and well known. Some day it dawns on some one that, if they are combined, new and useful results will be obtained. It may be that, so soon as the advantages of the combination are understood, the means of bringing it about are within the capacity of any fairly skilled mechanic. In a third class of cases inventive genius may be required both in perceiving the combination that is desirable, and in finding out a practical way of making it.
In applying these platitudes to the instant case it will be seen that there is nothing new in Patterson’s idea that the combination claimed by him would be useful. That was then at least 65 years old. All the greater would be the presumption of invention in one who after such a length of time found the way to attain the end. One who so succeeded could, it is true, not claim a monopoly of the combination, however brought about, because the conception' of that combination was not his contribution to the art. But he would be entitled, not only to a patent for his way of making that combination workable, but also to an extremely liberal construction of his claim, so as to cover a broad range of equivalents. Unfortunately Patterson’s claims are in fact for the combination, no matter how effected, and of that he was not the inventor. It is true that some of these claims apparently go somewhat into detail;. but the patent does not clearly tell us in what the invention lies, unless it is in the combination, nor have we been able to discover in what other..than such combination it is supposed to be found, although we have had the benefit of the testimony of highly qualified experts and of the briefs and oral arguments of able and experienced counsel.
The patent law requires the patentee to tell in what his invention consists. This is the.rule, which we may not relax, even if we would; but this is a case which from every standpoint calls for its reasonable application. ' Why, after the desirability of the combination was perceived, did two-thirds of a century pass before it was effected. The
Affirmed.